1. NA, Yanghee International Application Team Korean Intellectual Property Office National Phase of PCT international applications April 26, 2006 www.kipo.go.kr National Phase of PCT international applications

2. www.kipo.go.kr National Phase of PCT international applications - Page 1 - Time Limits for Entering National/Regional Phase Under PCT Chapters I and II (1) As a general rule, the time limit for entry into the national phase, both under Chapter I and Chapter II, is at least 30 months from the priority date (Articles 22 and 39) Time limit may be longer under the relevant national law Certain States do not yet apply the modified time limit under Article 22(1) as in force from 1 April 2002* - CH Switzerland, LU Luxembourg, SE Sweden TZ United Republic of Tanzania, UG Uganda * as of April 1, 2006 Further information - Volume II of the PCT Applicant’s Guide (National Chapter)

3. www.kipo.go.kr National Phase of PCT international applications - Page 2 - Time Limits for Entering National/Regional Phase Under PCT Chapters I and II (2) http://www.wipo.int/pct/en/texts/pdf/time_limits.pdf * With effect from March 3, 2006

4. www.kipo.go.kr National Phase of PCT international applications - Page 3 - Time limit to enter national phase applies irrespective of possible delays in international phase Late international search report and written opinion of the ISA Article 19 amendment time limit expiring later than 20 months from the priority date International preliminary examination delayed Late international preliminary report on patentability (Chapter II) Late translation of international preliminary report on patentability (Chapter II)

5. www.kipo.go.kr National Phase of PCT international applications - Page 4 - Reinstatement of rights by DO/EOs (Rule 49.6) Available in certain DO/EOs, where the applicant has missed the time limit under Article 22 or 39(1) to enter the national phase: - unintentionally, or at the option of the Office, in spite of due care required by the circumstances Applicants may submit a request for reinstatement and enter the national phase within: - 2 months from the date of removal of the cause of the failure to meet the time limit to enter national phase; or - 12 months from the date of expiration of the time limit to enter national phase; whichever period expires first

6. www.kipo.go.kr National Phase of PCT international applications - Page 5 - DO/EOs to which reinstatement of rights under Rule 49.6 does not apply* http://www.wipo.int/pct/en/texts/reservations/res_incomp.pdf * As of April 15, 2006

7. www.kipo.go.kr National Phase of PCT international applications - Page 6 - Basic requirements for entry into the national phase and start of national phase Start of the national phase - Only if the applicant performs certain acts before the expiration of a certain time limit (normally 30 months) i) National fee be paid to DO/EO ii) Translation of international application into an official language National processing may not start before the expiration of the time limits indicated above Early start of the national phase - If the applicant performs the above-mentioned acts together with an express request

8. www.kipo.go.kr National Phase of PCT international applications - Page 7 - Examples of special requirements which may be complied with after entry into national phase Translation of the priority document: May only be required where the validity of the priority is relevant to the determination whether the invention is patentable (Rule 51bis.1(e)) - Rule 51bis.1(e) does not apply to the following DO/EOs: CH, EP, ES Appointment of local agent and submission of power of attorney Oath or declaration by the inventor (US only) Assignment documents (of the priority rights or of the application)

9. www.kipo.go.kr National Phase of PCT international applications - Page 8 - Consequences of failure to perform the acts required for entry into the national phase - International application loses the effect of a national application and the procedure comes to an end in respect of each Office before which they have not been performed Non-performance of the required acts in respect of one Office - It does not alter the effect of the international application before the other Offices

10. www.kipo.go.kr National Phase of PCT international applications - Page 9 - Amendments in the national phase Applicant have the opportunity to amend the description, the claims and the drawings before any designated or elected Office Amendments are in accordance with the national law of the designated State in all respects not provided for in the PCT and the Regulations under the PCT Further amendments may be filed upon entering the national phase or within a prescribed time limit thereafter, in addition to any amendments made in the international phase

11. www.kipo.go.kr National Phase of PCT international applications - Page 10 - Correction of translation Error in the translation of the international application may be rectified by the applicant during the national phase before all designated Offices Scope of the translation of the international application may not exceed the scope of the international application in its original language If the scope of the translation is broader than that of the international application in its original language, the designated Office or any other competent authority of the designated State may limit the scope of the international application or of a patent resulting from it (Article 46)

12. www.kipo.go.kr National Phase of PCT international applications - Page 11 - Priority document and its translation Priority Document - If submitted within the time limit during the international phase: No designated Office may require priority document from the applicant - If not submitted or available during the international phase: No designated Office shall disregard the priority claim before giving the applicant an opportunity to furnish the priority document Furnishing of a translation of the priority document - Only where the validity of the priority claim is relevant to the determination of whether the invention concerned is patentable - Some designated Offices* require a translation of the priority document in all cases once national processing has started * As of February 17, 2006 : CH, EP, ES

13. www.kipo.go.kr National Phase of PCT international applications - Page 12 - Communication with DOs/EOs (Rule 93bis) Any communication, notification, correspondence or other document relating to an international application will be communicated by the International Bureau to DOs/EOs only upon their request and at the time specified by the Offices Most DOs/EOs will receive the majority of documents concerned only after an applicant has entered the national phase before its Office * KIPO as designated/elected Office now requests and receives most of the the documents via on-line

14. www.kipo.go.kr National Phase of PCT international applications - Page 13 - A few tips to remember in respect of entering national/regional phase Remember to monitor time limits for entering national phase - they apply irrespective of delays in the international phase Make necessary indications that application is entering the national phase, i.e., that it is not a direct national filing Translation of the international application must be correct and complete (no subject matter may be added and/or deleted) Pay the required fees (amount may be different from that applicable to direct national filing)

15. www.kipo.go.kr National Phase of PCT international applications - Page 14 - KR National Phase Requirements (1) Korean national phase (general): Time limit: 31* months from the priority date (under Chapter I and under Chapter II) * With effect from March 3, 2006 Language of the translation: Korean Filing and examination fees etc. : basically identical to those due for a national direct filing** ** Reductions of the national fee are also applicable

16. www.kipo.go.kr National Phase of PCT international applications - Page 15 - KR National Phase Requirements (2) Reductions of the national fee : Filing fee, fee for request for examination and annual fees for the first to the third year - 70% where the applicant is a natural person and is also the inventor Fee for request for examination - 70% where the ISR and IPER established by the Korean Intellectual Property Office have been submitted - 30% where the ISR or IPER established by the Korean Intellectual Property Office has been submitted - 10% where the ISR established by the European Patent Office has been submitted

17. www.kipo.go.kr National Phase of PCT international applications - Page 16 - KR National Phase Requirements (3) Required contents of the translation for entry into the national phase: Under PCT Article 22: Request, description, claims (if amended, as originally filed or as amended, together with any statement under PCT Article 19, at applicant’s option), any text matter of drawings, abstract Under PCT Article 39(1): Request, description, claims, any text matter of drawings, abstract (if any of those parts has been amended, both as originally filed and as amended by the annexes to the international preliminary examination report)

18. www.kipo.go.kr National Phase of PCT international applications - Page 17 - KR National Phase Requirements (4) Special requirements of the Office Name and address of the inventor if they have not been furnished in the “Request” part of the international application Appointment of an agent if the applicant is not a resident in the Republic of Korea Translation into Korean of the priority document if it is needed for the purpose of examination or trial* - With effect from January 1, 2006

19. www.kipo.go.kr National Phase of PCT international applications - Page 18 - KR National Phase Requirements (5) Amendment of Patent Application (Article 47 of Patent Act of KIPO) An applicant may, basically, amend the description(including claims) or drawing(s) attached to a patent application before the examiner issues a certified copy of a decision to grant a patent An amendment to a description or drawing(s) must be within the scope of the features disclosed in the description or drawing(s) originally attached to the application

20. www.kipo.go.kr National Phase of PCT international applications - Page 19 - KR National Phase Requirements (6) Special Provisions on an Invalidation Trial of a Patent (Article 213 of Patent Act of KIPO) Any person may request a trial to invalidate a patent for an international application on the grounds that the invention does not disclose in the description, claim(s) or textual matter of the drawing(s) of an international application submitted on the international filing date and in the translated version

21. www.kipo.go.kr National Phase of PCT international applications - Page 20 - KR National Phase Requirements (7) Priority Document and its Translation Priority Document - If not submitted or available during the international phase: invite the applicant to furnish the priority document Translation of priority document - Invite the applicant to furnish the translation of priority document if it is needed for the purpose of examination or trial* * With effect from January 1, 2006

22. www.kipo.go.kr National Phase of PCT international applications - Page 21 - KR National Phase Formality Examination system (KIPONET II) Formality examination No defect Some defect Receipt & Notification History Result of automatic checking Fee

23. www.kipo.go.kr National Phase of PCT international applications - Page 22 - Communication on Request system in KIPO (KIPONET II) Type of document Int. App. No. Type of document National App. No.

24. www.kipo.go.kr National Phase of PCT international applications - Page 23 - Statistics of PCT international applications (KR) Number of PCT international applications in the Republic of Korea * 6 th biggest user of the PCT in 2005

25. www.kipo.go.kr National Phase of PCT international applications - Page 24 - Statistics of PCT National Phase Entry (KR) Number of PCT national phase entry in the Republic of Korea

26. www.kipo.go.kr National Phase of PCT international applications - Page 25 - Thank you for your attention! NA, Yanghee International Application Team Korean Intellectual Property Office e-mail : yhna@kipo.go.kryhna@kipo.go.kr